By David Huang

 

At the moment, China does not allow the use of broken lines to illustrate partial designs to be protected in design patent applications, while many other jurisdictions like US, Europe and Japan do.  Applicants thus need to properly handle broken lines in drawings for applications to be filed in China claiming priority from these jurisdictions.  This situation would likely continue for the foreseeable future since the latest draft revisions to the PRC Patent Law have dropped a provision that would allow partial designs.  This article is intended to summarize the recommended best practice to handle broken lines in view of CNIPA's recent practice.

 

In brief:

 

(1)  Deletion or conversion to solid lines are the primary ways to handle broken lines.

(2)  Deletion of certain broken lines, even if they have been accepted by the formality examiner before grant, could create a new matter issue that may occur in a future invalidation action.

(3)  The desired revisions to broken lines should be based on a comprehensive consideration of priority claims, potential new matter issues and maximization of the protection scope.

(4)  The mechanism of serial designs allowed by China can be used to achieve the desired outcome.

(5)  It is preferred to make the revisions before the Chinese filing, other than in response to an office action during examination.

(6)  To enforce a design patent already granted after deletion of broken lines, the patent owner needs to keep the potential new matter issue in mind in evaluating the validity of the patent or different designs included in it.

 

Objection and revisions in examination

 

If drawings of a Chinese design patent application include broken lines, the Chinese examiner will issue an objection to the lines.  But normally the examiner would not specifically indicate how the applicant should handle them.  In response, some applicants would choose to delete the lines (and thus features shown by the lines), in belief that the patent to be granted without those features would be broader.  Some applicants would convert the broken lines into solid lines.  Some other applicants would take both options by making use of the mechanism of serial designs, to create one design with the broken lines deleted and another design with the broken lines converted into solid lines.

 

In practice, most Chinese examiners would accept all these revisions.

 

Deletions may introduce new matter

 

Invalidation decision No. 39634 made by CNIPA in 2019, however, called into question the practice of simply deleting broken lines, even if the deletion was accepted by the examiner before grant.

 

The patent at issue in this invalidation action includes 3 serial designs as granted.  The applicant deleted certain broken lines in Designs 1 and 2 in comparison with the initial drawings as filed, while converting all the broken lines into solid lines in Design 3.  The panel invalidated both Designs 1 and 2 on the grounds that the deletion of broken lines introduced new matter, and found no new matter issue in Design 3.

 

The patent owner presented the following arguments for the deletion of broken lines in Designs 1 and 2, none of which convinced the panel however:

 

(1)  Broken lines in the initial drawings are intended to indicate "dispensable" features, and thus deletion of them did not introduce new matter.

(2)  All features in the final Designs 1 and 2 were illustrated in the initial drawings, and thus no new matter was introduced.

(3)  The deletion was approved by the original examiner before granting the patent.  Invaliding the designs now because of the deletion would be against the applicant's interest in trusting the examination and grant process.  Also, it is believed that a large number of design patents have been granted with such deletion of broken lines, and thus implementing such a ground of invalidation would be an undesirable disruption to the overall landscape.

 

The panel made the following reasoning in its decision:

 

(1)  Drawing-making for Chinese design patents follow the relevant specifications for technical drawing-making and mechanical drawing-making.  In these specifications, broken lines usually indicate internal or invisible edges or contours.  The patent owner's argument that broken lines can be used to indicate dispensable features has no legal basis.

(2)  Specific to this case, the broken lines at issue clearly indicate features on the surface of the subject product, not internal or invisible features, and thus should not be deleted.

(3)  Since the broken lines indicate features on the surface of the subject product and are clearly included in the initial drawings, deleting these lines changed the shape or pattern on the surface of the product and thus the design after the deletion is different from the one before the deletion.  Therefore, deleting the broken lines introduced new matter.

 

The new matter issue regarding the deletion of broken lines is central in the invalidation action.  We thus believe that invalidation decision No. 39634 is not an incidental decision but the panel's position represents at least the Division of Reexamination and Invalidation's general policy.  Meanwhile, from our knowledge, many examiners in the formality examination department for design patents applications still allow such deletions, creating potential "traps" against the applicants in future invalidation actions.

 

With the above inconsistency as the backdrop, an article written by 3 examiners and published in a 2013 issue of the journal China Patents and Trademarks provides a good summary of the relevant considerations, which is coherent with the holding of invalidation decision No. 39634.  In this sense, the allowance by many examiners of deletion of broken lines deviates from that coherence. 

 

We further did an informal telephone survey with some examiners in the formality examination department.  Some of them stated that they have been following the spirit of the above article and invalidation decision No. 39634.  The other examiners apparently did not realize this issue at all, and they likely are those examiners who allow the deletions without a second thought.  And for these examiners, when we introduce to them the spirit of the above article and invalidation decision No. 39634, they also stated that the spirit is reasonable and they likely would follow it in future practice.  It appears that these examiners are currently condoning the deletions merely because they do not bother themselves too much to ponder through the potential new matter issue, or the deletions indeed relate to broken lines that can be deleted without triggering a new matter issue, as to be discussed below.

 

When broken lines can and cannot be deleted

 

The following is based on our reading from invalidation decision No. 39634, the above articles written by the 3 examiners and the survey with current examiners.

 

In the following situation, the broken lines cannot be deleted but must be converted into solid lines:

 

(1)  Without the broken lines, the remaining solid lines would illustrate an incomplete portion of the subject product; that is, that portion per se is not a complete product that is practically used or sold alone.

(2)  The broken lines indicate the edge or contour of the subject product, without which it would be unable to clearly illustrate and define the whole product.

(3)  The broken lines indicate certain features visible on the surface of the subject product and inseparable from the main body of the product, deletion of which would create a design different from the design with the features (invalidation decision No. 39634 was made under this logic).

 

In the following situation, broken lines must be deleted:

 

(1)  The broken lines indicate the environment in or with which the subject product is used. 

 

For example, the environment can be another larger product in which the subject product is positioned, such as a product and a casing holding it.  If the environment is about another product, the applicant may separate that product into a separate design, as a serial design to be included in the same application or as the subject of a separate application (which can be a divisional application if the revision is made during examination). 

 

(2)  The broken lines indicate an internal structure invisible from outside the subject product.

 

In the following situation, the applicant has the choice of deleting the broken lines or converting them into solid lines:

 

•   The broken lines indicate a separable portion of the subject product, without which the product is still complete.  A product assembled from multiple components are possible examples of this situation.

 

In this situation, the applicant may consider whether to protect that portion and the main body without the portion as two separate designs.  If the separation is possible, it would provide the maximum protection for the applicant.

 

It should be noted that if such a separation happens during the examination, whether the interface between that portion and main body was shown in the initial drawings would be a critical issue.  If the interface was not shown, after that portion and main body are separated, a design with the interface visible from outside would be including new matter; in this case, the applicant can only convert the broken lines into solid lines.

 

Recommended best practice

 

We recommend the following best practice based on the above analysis:

 

(1)  If the applicant indeed wants to delete certain broken lines, it is preferred to do it in the initial drawings before filing the Chinese application, rather than waiting to respond to an office action.

 

The initial drawings would be the original disclosures for the Chinese application, and thus can thoroughly avoid a potential new matter issue.

 

Even if it is made in the initial drawings, deletion of broken lines could create an issue that the design as illustrated in the Chinese drawings without the broken lines cannot enjoy the priority of the foreign application.  This is because of the same reason that the Chinese examiner would hold that the design without the broken lines (to be included in the Chinese application) is different from the design with the broken lines (in the foreign priority application).

 

(2)  To address the potential new matter and priority issue, also for the maximum protection, the applicant can create serials designs, one with the broken lines deleted and one with the broken lines converted into solid lines.

 

By doing so, at least the latter design can enjoy the priority claim, and if the revision is made during the examination, the design would also be free of new matter concern.

 

(3)  If the broken lines are about a separable component, or even an independent product, the applicant can have that component/product separated from the main body/subject product and treat both subjects as separate designs.  Depending on the situation, the applicant may include the two designs in one application or file a divisional application for one of them. 

 

And if this separation is done toward the initial drawings before the Chinese application is filed, the potential new matter issue with the "interface" as discussed above is also avoided.